Infonet
Services Corporation v. Infonet Limited
Claim Number: FA0107000098074
PARTIES
The Complainant is Infonet Services Corporation, El Segundo, CA (“Complainant”) represented by Michael K Grace, of Grace & Sater LLP. The Respondent is Infonet Limited, Buckhurst Hill, UK (“Respondent”) represented by Zak Muscovitch, of Barrister & Solicitor.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <infonet-online.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
James Alan Crary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 13, 2001; the Forum received a hard copy of the Complaint on July 16, 2001.
On July 23, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <infonet-online.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@infonet-online.com by e-mail.
A timely response was received and determined to be complete on August 6, 2001.
On August 13, 2001, the Complainant submitted “Complainant’s Reply To Response To The Complaint”.
On
August 14, 2001, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum
appointed James Alan Crary as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of the INFONET trademark. In addition to a registration of the United States Patent and Trademark Office (Reg. No. 927, 925 registered January 25, 1972) and Complainant obtained a United Kingdom registration (Reg. Nos. 1289430 registered January 10, 1986) and others as well as other registrations in many other countries worldwide.
The mark has been in continuous use in commerce for over 30 years in connection with global networking and software systems, high-speed processing, and data transmission services as well as other products and services. The INFONET mark is in use in the United States and in the United Kingdom where the Respondent is located.
Its January 1986 Great Britain registration was in class 37, class 38, and class 42.
Complainant maintained that through it’s intensive continuous, widespread and exclusive use of “INFONET” in commerce for more than 30 years that Complainant’s mark identifies and distinguishes a single source of goods and services and that the mark had become a famous trademark and service mark.
In March 2000 the Respondent registered the domain name infonet-online.com. Adding the term “online” to the INFONET mark did not distinguish the domain name from the INFONET mark or eliminate the likelihood of confusion. Respondent admitted that the disputed domain name caused substantial confusion, in it’s April 19, 2001 letter to the Complainant.
Complainant maintained that Respondent had no right or legitimate interest in the INFONET mark or the domain name. It has never done any bona fide business as INFONET LIMITED and there had been no bona fide use of the domain name. Respondent’s sole use of the domain name had been to offer it for sale to the Complainant or to the highest bidder.
Respondent threatened to create a website offering a “business-to-business/tourist adult information service” linked to the domain name which would include “information and photographs of an adult nature” (exhibit 10) in the effort to induce Complainant to purchase the disputed domain name.
Complainant is certain that the disputed domain name was registered and used in bad faith because there were circumstances indicating that Respondent had registered or acquired the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name (ICANN Policy Sec. 4(b)(i)).
It was reiterated that Respondent had not done business under the disputed domain name apart from offering it for sale. Respondent was now attempting to extort money from the Complainant under threat of launching the adult oriented site.
B. Respondent
It was conceded that Complainant had registered trademarks for INFONET, but the registrations were not exhaustive of all classes of goods and services. Complainant’s registered trademark did not encompass the provision of an online business-to-business information resource website.
Respondent asserted that Complainant’s mark INFONET is a common name that was in use by a multitude of companies all over the world. A search of United States and Patent and Trademark Office revealed twenty-five recorded registrations at one time or another, all of which featured the words INFONET, several registrations were current and not owned by the Complainant.
Respondent found 1114 domain names that featured the word INFONET. It was asserted that the word INFONET can be used in good faith by a wide variety of persons and that it is not such a famous or exclusive mark that it is only used by Complainant.
Respondent maintained that the word “infonet” combined with the word “online” obviously were different from Complainant’s trademark and that it could not be reasonably argued that Complainant’s trademark and domain name were confusingly similar since INFONET itself was not a distinctive or exclusive mark.
Respondent maintained it had never heard of Complainant’s business prior to incorporation of Infonet, Ltd. in the United Kingdom in 1992. “INFONET” and “ONLINE” were generic words. Respondent asserted that “INFONET” is a descriptive word that refers to an information network. The concept was not proprietary. If it had been proprietary, Complainant would have taken greater steps to prevent the approximate 24 American trademark registrations.
Complainant’s mark didn’t encompass the word “ONLINE” which was a descriptive word referring to an Internet service. Respondent asserted that where a domain name is generic, the first person to register it in good faith is entitled to the domain name. The generic and descriptive words and phrases would not be generally transferred to a Complainant just because the Complainant has a registered trademark.
Since it appeared that potential or existing clients of Complainant were e-mailing requests to the infonet-online.com site, Respondent had contacted Complainant as a matter of courtesy. Respondent maintained that incorporation of Infonet, Ltd. by Respondent conclusively demonstrated a bona fide intention to carry on a business under that name. Respondent asserted that the existence of a corporation with a name similar to the domain name registered nine years later must be construed as evidence of bona fide intention to do business and not part of a far-sighted scheme by Respondent to cyber squat on the name.
The Respondent is operated by the managing director of a group of privately owned companies which compile business-to-business information services on a global scale for the television and broadcast media. Respondent asserted that time and money spent to incorporate Infonet, Ltd. was done with the intention of producing a “business-to-business tourist/adult information services”, a venture which was entirely consistent with respondent’s professional business background. No actual business was carried out under Infonet, Ltd. until the year 2000.
In March 2000 Respondent selected the Internet domain name infonet-online.com. It was asserted the Respondent had demonstrated bona fide preparations for use of infonet-online.com apart from its incorporation in 1992 by the creation of a ‘splash’ page for the website. Respondent maintained that there had been only a matter of months between the registrations of the disputed domain name and that it could not reasonably be faulted for not demonstrating more interim use. Respondent asserted that it had owned the name for many years and had not yet commenced business. A negative inference should not be drawn. The combined effect of Respondent’s prior incorporation together with its principal’s business background and its existing website showed irrefutable evidence of legitimate use and purpose. Respondent maintained that there had never been an offer to sell the domain name; rather there had been an offer to sell an established company name, which owned the disputed domain name. This was a normal business practice.
Respondent asserted that there had been no bad faith registration, even were it shown that there had been bad faith use in the act of offering to sell the Infonet, Ltd. corporation.
Regarding reverse domain name hijacking, Respondent asserted it had evidence of Complainant’s reverse domain name hijacking. It was asserted that the Complainant should not be allowed to employ these proceedings to remedy it’s concerns concerning misdirected Internet traffic since Respondent had registered the domain name in good faith for a legitimate purpose. It was by no means a cyber squatter and should not be a victim of Complainant’s attempt to take Respondent’s property. Respondent maintained that it was the price of the domain name, which led to these proceedings, and not any legitimate claim of cyber squatting.
C. Additional Submissions
Complainant noted that the response contained no challenge to it’s ownership of the INFONET mark and it’s U.S. Trademark Registrations which had obtained incontestable status. Various judgments wherein the Complainant had enforced it’s trademark rights were attached.
Complainant noted that of twenty-five recorded registrations with the United States Patent and Trademark Office (Respondent’s exhibit A), two were pending trademark applications which would be opposed by the Complainant, sixteen were trademark applications which had been abandoned or successfully opposed by the Complainant, three were “dead” trademark registrations no longer in effect, two of the four remaining belonged to the Complainant, the two others were in fields remote from Complainant’s computer networking services and Internet industry, one being for Infonet Gazette (class 16) for a health information newsletter, the other Infonet Real Estate (class 36) for goods provided to the real estate industry.
Complainant noted that the term “infonet” had been coined in 1969 before the advent of computer networks, the Internet, or Respondent’s use. After 30 years of continuous use of this coined term, the INFONET mark became a distinctive indicator of the Complainant’s goods and services.
Respondent’s argument that the domain name in dispute and Complainant’s mark are not confusingly similar was directly refuted by Respondent’s own admission of actual confusion. In its correspondence to the Complainant, Respondent described how INFONET customers contacted Respondent through its infonet-online.com website when searching for the Complainant. This was persuasive evidence of infringement according to legal texts.
Respondent’s prior reservation of a similar corporate name did not prove any legitimate interest in the contested domain name registered in March 2000. Mere reservation of a corporate name did not create a legitimate interest in Complainant’s INFONET trademark. Since rights to a corporate name, like a trademark, arise from prior usage, the fact that a junior user has a corporate charter for his name is no defense. It certainly cannot provide a defense against a proven senior user.
Respondent’s use of a ‘splash’ page which merely offered the website for sale was not commercial use for the sale of goods or services. The offer to sell the shelf registration was nothing more than an offer to sell the disputed domain name.
FINDINGS
1. The Complainant owns valid and subsisting U.S. and U.K. trademark registrations for the mark INFONET.
2. The INFONET mark has been in continuous use in commerce over 30 years in conjunction with its business of global computer networking, software systems, high-speed data processing, and data transmission services. Complainant’s ownership of the INFONET mark and it’s U.S. Trademark registrations have incontestable status. Further Complainant has successfully defended its rights to the mark.
3. Respondent has not engaged in business or offered goods and services under the Infonet, Ltd. name and was not known by that name.
4. Respondent has not offered goods or services on the Internet under the disputed domain name infonet-online.com.
5. The letters of Mr. S. Imber dated April 19, 2001 and June 15, 2001 constituted a solicitation of an offer from the Complainant to purchase the contested domain name although no such offer resulted.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or
Confusingly Similar
The Panel concluded that the disputed domain name was identical and/or confusingly similar to Complainant’s mark. The domain name contains the entire mark and merely adds a generic word “online” to it. Such additions do not defeat a claim of confusingly similarity. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001). In that case the Panel concluded that broadcomonline.com was confusingly similar to Complainant’s BROADCOM mark. See also The Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) which found that Respondent’s domain name prudentialonline.com is confusingly similar to Complainant’s PRUDENTIAL mark. It was therefore found that Complainant had met the requirements of Policy 4(a)(i).
Rights or
Legitimate Interests
The Panel concluded that the Respondent had no rights or legitimate interests in respect to the disputed domain name. It was not vested with any right by virtue of its incorporation under the Infonet, Ltd. corporate name. There was no evidence of any legitimate commercial use. Respondent could point to no good or services it had offered but merely the assertion that it planned to offer a business-to-business/tourist adult information service on the Internet. It was noted that the Respondent so far as can be discerned from the materials submitted by Respondent had not engaged in adult-oriented businesses in the past, rather it had provided services to the broadcast and television media.
The Panel recognizes a heavy burden would be placed on Complainants if in support of their cases on illegitimacy, Complainants were faced with the burden of providing detailed proof of any lack of rights or legitimate interests on the part of Respondents. Typically the underlying facts are in the exclusive or near exclusive possession and control of the Respondent. Therefore in cases where there has been no discernible use, the Panel believed that where as here, there is a question of both illegitimacy and evidence of bad faith, it is reasonable to shift the burden to the Respondent to adequately show that it’s use of the contested domain name was legitimate, by showing that it is making a bona fide commercial offering of goods and services or preparations for such offerings, or non-commercial or fair use. See Tree Forms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec.18, 2000). See also Playboy Enter. Int’l, Inc. v. Rodriquez D2000-1016 (WIPO Nov. 7, 2000).
The Panel noted that there were no discernible preparations for use after the disputed domain name was registered in March 2000 and notice of this dispute some thirteen months later. There had been no discernible preparations for commercial use or the offering of goods or services during the approximate eight prior years in which Respondent was incorporated. Given these circumstances the Panel concluded that Respondent’s failure to develop a site raised an inference of the lack of such intent. Respondent never asserted that it intended a non-commercial or fair use.
It was therefore found by the Panel that Respondent lacked rights and legitimate interests in the disputed domain name.
Registration and
Use in Bad Faith
Complainant asserted that in this case Respondent’s conduct constituted circumstances which indicated the disputed domain name had been registered or acquired for the purpose of selling the domain name to the Complainant who is the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, Policy 4(a)(i). The Panel agreed. The Respondent has made no use of the infonet-online.com domain name nor of the corresponding corporate name except to offer them for sale to the highest bidder. Passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale. Respondent’s contention that the domain name itself was not offered for sale was without merit since the contemplated sale of the corporate name included the sale of the associated domain name itself. See Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enter., D2000-0715 (WIPO Sept. 9, 2000). See also Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000).
Regarding the asserted reversed cyber squatting, the Panel found no merit to the Respondent’s contentions. First of all it appeared from the evidence that the Respondent possessed valid and subsisting trademark rights both in the United States and in the United Kingdom. This finding was supported by evidence that the Complainant had vigorously and successfully defended it’s rights to the INFONET mark. The evidence did not support a finding that Complainant was using this preceding in an abusive manner. Complainant merely sought the remedy provided for under the Policy.
DECISION
Based on the above findings and conclusions it was decided that Complainant was entitled to relief under Policy 4(i), therefore the Panel directs that the Respondent transfer the domain name infonet-online.com to the Complainant.
James Alan Crary, Panelist
Dated: August 24, 2001
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